- Whether the Controller erred in rejecting the patent under Section 15 of the Indian Patents Act, on the grounds of lack of inventive step and non-patentability under section 3(e) of the Patents Act, 1970.
Subject matter of patent: Subject matter is directed to an herbicidal composition, comprising of aryloxyphenoxypropionic ester, acetoacetate synthase (ALS) inhibitors and additives in a certain ratio.
- The First Examination Report (FER) for the instant application 2668/DEL/2015 was issued on 20/07/2018 on the ground of lack of novelty, inventive step, and section 3(e).
- The appellant submitted the response to the FER and subsequently hearing notice was issued on 09/10/2019 which retained the objection on lack of inventive step based on cited prior arts D1-D5 and non-patentable subject matter under section 3(e).
- The respondents, considering the facts and finding, hearing proceedings refused the grant of patent under Section 15 of the Patents Act, 1970 on the ground of lack of inventive steps under section 2(1)(j) and non-patentable subject matter under section 3(e) of the Patent Act 1970.
Submission by Appellant
- According to the appellants, the cited prior art D1 contains an herbicidal composition of Pyridate and one sulphonyl urea compounds which is distinguishable from subject invention and the cited prior art D2 does not disclose nor makes obvious the composition in the impugned application.
- The appellant submitted that this is the first use of aryloxyphenoxypropionic ester and Acetolactate synthase (ALS) inhibitors as ingredients of an herbicidal composition. It is the combination of these two active ingredients that creates synergistic effect that is novel and inventive and neither disclosed nor made obvious by any of the cited prior art.
- The inventive herbicidal composition exhibited high weed control efficiency as compared to solo formulation. Also, the subject invention lowered the standard recommended dosage of individual herbicides for higher yield.
Submissions by Respondents
- The subject matter of claims 1-15 of the present application is not considered novel under section 2(1) (j) of Patents Act 1970 in view of the cited prior art documents D1as it discloses a similar herbicidal composition.
- According to the respondents, the combination of the technical teaching as disclosed in D1-D5 is suggested to the skilled person in order to provide claimed herbicidal composition, without any technical advancement or economic significance over the prior art. Thus, the present claims lacks inventive step and fail to meet the requirement of section 2(1) (j) (a) of the Patents Act, 1970.
- Further, the dependent claims do not appear to contain any additional features which, in combination with the features of any claim to which they refer, involve an inventive step, because the subject-matter concerns only minor modifications which are obvious in view of D1-D5. Hence claims 1-15 lack inventive step.
- Claims 1-15 fall under section 3(e) of the Patents act, 1970, as the said claims defines a mere admixture resulting only in the aggregation of the properties of the components thereof. It is not clear if the combined agents act together to provide a technical effect that is greater than just the sum of the two or more agents alone, or whether the combination is in fact a mere juxtaposition with no interaction of the agents.
- The court observed that none of the cited prior arts define all the three feature(s) as claimed in the instant application. Hence, the question of lack of novelty cannot be sustained though it is not specifically raised in hearing notice.
- The court opined that the ‘obviousness’ determination must be strictly and objectively judged. The detailed procedures for determination of inventive step as mentioned in the Manual of Patent Office Practice and Procedure are to be followed. Thus, the findings on inventive step are not sustainable, as there is sufficient reason to believe that the invention is not the routine practice of mere admixing the ingredients.
- The court explained that in a composition, if the functional interaction between the features achieves a combined technical effect which is greater than the sum of the technical effects of the individual features, it indicates that such a composition is more than a mere aggregation of the features and held that the complete specification of the impugned application exhibits synergistic effect which is sufficient to overcome section 3(e) objection.
IPAB order No: OA/53/2020/PT/DEL
Copy of judgement